Journal

OF THE

Patent Office Society

Published monthly by the Patent Office Society. Office of Publication 3387 Stuyvesant Place, N. W., Washington, D. C. Subscription $2.50 a year Single copy 25 cents

Howard S. Miller, Editor-in-Chief.

M. L. Whitney, Business Manager (Room 180, U. S. Patent Office.) 3319 Stuyvesant Place, Washington, D. C.

N. E. Eccleston, Circulation.

Entered as second class matter, September 17, 1918, at the post office at Washington, D. C., under the act of March 3, 1879.

Publication of signed articles in this journal is not to be understood as an adoption by the Patent Office Society of the views expressed therein. The editors are glad to have pertinent articles submitted.

VOL. IX

JULY, 1927

No. 11

THE CONTINUING-APPLICATION EVIL

An ably presented paper in our June issue of this JOURNAL entitled "Delay in Filing Continuing Applications" suggested, in view of the trend of certain court decisions therein cited tending to look with disfavor on long delay in filing continuing applications, that it might well be taken into consideration how long it was safe to delay in the filing of such applications to avoid the entire loss to the inventor of any protection at all in the continuing application.

The courts apparently recognize the continuing-application evil and seek to minify it by limiting the time for

filing such applications. It may be queried whether that remedy is sufficiently drastic to accomplish the desired result. Indeed, it has previously been proposed in the columns of this JOURNAL (Vol. VII, No. 2, p. 74, Oct., 1924) that continuing applications should be abolished altogether. The trend of important court decisions since that date indicates that such abolition is the proper remedy, and those decisions, being sanctioned by the U. S. Supreme Court are ample authority for such abolition. It merely requires that the Patent Office reject the continuing application on the earlier filed one, with no other ground of rejection being applied.

Such procedure is in conformity with the decision in the Ticket Register case, reviewed in a paper also presented in the previously mentioned June issue of this JOURNAL and entitled "Patent Application as a Reference" wherein it was pointed out that under the decision in that case there should be no such thing as a continuation in part, nor a fortiori, a continuation. The authority for the decision flows from the U. S. Supreme Court decision in the Milburn case therein cited, which concedes that the writing of a description of an invention and locking it in a portfolio is no bar to prevent a later inventor from obtaining a patent on the invention, but holds that the filing of the same description in the Patent Office in the form of an application for patent is a bar as of its filing date to the obtaining of a patent by a later inventor, because the description would be made public as soon as the Patent Office did its work, and the delays of the Patent Office ought not to cut down the effect of what has been done.

Under that view of the matter, it is obvious that a later filed application to be allowable must be patentably distinct (not merely as to claims but also as to disclosure) from the earlier filed one independently of whether the two be filed by the same or different inventors. Under the present rule of preserving pending applications in secrecy, the wisdom of which has also previously been questioned by different writers in the columns of this

JOURNAL (Vol. VII, No. 2, p. 70, Oct., 1924; Vol. IX, No. 8, p. 383, April, 1927), it is true the Patent Office may find difficulty in rejecting the later filed application of one inventor until the earlier filed application of another inventor has issued as a patent, but where the two applications are filed by the same inventor, no such difficulty arises.

Due regard to the basis of the decision in the Milburn case requires that a later filed application be rejected

the Patent Office on an earlier one from which it is not patentably distinct. The decision in the Ticket Register case is in strict conformity with the decision in the Milburn case by holding that where the later filed application has not been rejected by the Patent Office on the earlier filed application from which it is not patentably distinct, the patent granted on the later filed application is invalid.

Strict application of these decisions would rapidly dispose of continuing subject matter in applications. The same application of the decisions would require the rejection of a substitute application on its original. If the delay which caused the abandonment of the original were unavoidable, the original could be revived under the statutory authority given the Commissioner, and proceedings therein continued without filing what we now call a substitute application. If the delay were not unavoidable, why should the applicant in effect be allowed to circumvent the statutory discretion vested in the Commissioner to decide on the question of delay and still obtain a patent in the face of these decisions merely by filing a new application on the identical invention he knew had been described and put on file in the Patent Office at the date of the original application? If it can be fairly conceded that an applicant is entitled to try for a patent on his original disclosure, it seems only logical that he should continue proceedings in the original application.

In view of these considerations does it seem proper to anticipate a time when continuation, continuation in part

and substitute will be terms no longer used in patent nomenclature, with the only permissible species of what we now class with continuing applications being divisional applications, and those being required to be filed promptly as suggested in the ably presented paper referred to in our opening sentence?

THE NEW MEMBER OF THE BOARD OF APPEALS

EUGENE LANDERS

On May 2, 1927 the Board of Examiners-in-Chief was succeeded by the newly created Board of Appeals. Besides the five examiners-in-chief of the old board, there are included on the new board four additional members, namely The Commissioner, The First Assistant Commissioner, The Assistant Commisioner, and Mr. Eugene Landers, promoted from position as Law Examiner.

Mr. Landers was appointed from New York as a Fourth Assistant Examiner, Dec. 9, 1907 and was promoted through the grades becoming Law Examiner Mar. 20, 1922. He received the degree of M. E. from Cornell and LL.B from Georgetown University, and is a member of the bar. His training and Office experience thus exceptionally fit him for the duties of his new position.

V. I. RICHARD

PRINCIPAL EXAMINER OF DIVISION 55

V. I. Richard was born in Indiana, lived in Ohio while from two to ten years of age, and has since been a resident of the District of Columbia. His training was chemical, including study at the Technical High School of Washington, at George Washington University and at Carnegie "Tech", and six years practical work in the Chemical Department of the Bureau of Standards.

On Dec. 28, 1914 he entered the Patent Office as assist